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Intellectual Property
Villanova University School of Law
Risch, Michael V.

Intellectual Property

Fall 2011

Professor Michael Risch

Villanova Law


– Copyright: Original works of authorship fixed in tangible medium of expression

o Subject Matter

§ (1) Original work of authorship

· (A) Independent creation

· (B) Modicum of creativity

§ (2) Fixation

o Copying

o Derivative Works, Distribution, Performance

o Secondary Liability

o Fair Use I

– Trade Secrets: information that derives value due to secrecy

o Definition

o Public Disclosure

o Misappropriation

– Patents: novel, useful, nonobvious inventions

o Subject Matter

o Utility

o Description

o Novelty & Bars

o Obviousness

o Claim Construction

o Infringement

o Contributory Infringement

– Trademark: words/symbols that distinguish the source of marketplace offerings

o Subject Matter, Distinctiveness

o Trade Dress, Priority

o Infringement

o Dilution

o Defenses



– Defined: Original works or authorship fixed in a tangible medium of expression

o 17 U.S.C. §102: In General

§ (a) Copyright protection subsists, in accordance with this title in original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device. Works of authorship include the following categories:

· (1) Literary works;

o Words, numbers or other verbal words or indicia

§ Ex) Books, periodicals, manuscripts, phonorecords, film, tapes, disks, or cards

· (2) Musical works, including any accompanying words

o (§101) Works that result from the fixation of a series of musical, spoken, or other sounds, but not including the sounds accompanying a motion picture or other audiovisual work, regardless of the nature of the material objects, such as disks, tapes, or other phonorecords, in which they are embodied

· (3) Dramatic works, including any accompanying music

o Portraying a story by means of dialogue or acting

· (4) Pantomimes and choreographic works

· (5) Pictorial, graphic, and sculptural works;

o (§101) Such works include works of artistic craftsmanship insofar as their form but not their mechanical or utilitarian aspects are concerned; the design of a useful article, as defined in this section, shall be considered a pictorial, graphic or sculptural work only if and only to the extent that such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article

§ Ex) Fine, graphic, and applied art, photographs, prints and art reproductions, maps, globes, charts, diagrams, models, and technical drawings, including architectural plans.

· (6) Motion pictures and other audiovisual works;

o (§101) “Motion pictures” are audiovisual works consisting of a series of related images which, when shown in succession, impart an impression of motion, together with accompanying sounds, if any

o (§101) “Audiovisual works” are works that consist of a series of related images which are intrinsically intended to be shown by the use of machines or devices such as projectors, viewers, or electronic equipment, together with accompanying sounds, regardless of the nature of the material objects, such as films or tapes, in which the works are embodied

· (7) Sound recording; and

· (8) Architectural works

o (§101) An “architectural work” is the design of a building as embodied in any tangible medium of expression, including a building, architectural plans, or drawings. The work includes the overall form as well as the arrangement and composition of spaces and elements in the design, but does not include individual design features.

§ (b) In NO CASE does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such a work.

· Lotus Development Corp. v. Borland International (1995)

o Background: Plaintiff designed a spreadsheet program that enabled users to perform accounting functions electronically on a computer. Defendant copied the menu structure of the program. Plaintiff argued that this was copyrighted, and therefore, defendant infringed

§ Held: The plaintiff’s menu command hierarch was an uncopyrightable “method of operation” under §102(b). “The menu command names and structure are an inseparable part of the method of operating Lotus 1-2-3 since they were used to invoke the functions that are necessary to run macros.”

o 17 U.S.C. §103: Compilations and Derivative Works

§ (a) The subject matter of copyright … includes compilations and derivative works, but protection for a work employing preexisting material in which copyright subsists does not extend to any part of the work in which such material has been used unlawfully

§ (b) The copyright in a compilation or derivative work extends only to the material contributed by the author of such work, as distinguished form the preexisting material in the work, and does not imply any exclusive right in the preexisting material. The copyright in such work is independent of, and does not affect or enlarge the scope, duration, ownership, or subsistence of, any copyright protection in the preexisting material

General Requirements:

– (1) Original Work of Authorship

o (A) Independent Creation

§ Collective Works: (§101) A “collective work” is a work, such as a periodical issue, anthology, or encyclopedia, in which a number of contributions, constituting separate and independent works in themselves, are assembled into a collective whole.

§ Compilations & Derivative Works: (§101) A “compilation” is a work formed by the collection and assembling of preexisting materials or of data that are selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship. (This includes “collective works).

· NOT Independent facts and


§ “Where the uncopyrightable subject matter is very narrow, so that “the topic necessarily requires,” if not only one form of expression, at best only a limited number, to permit copyrighting would mean that a party or parties, by copyrighting a mere handful of forms, could exhaust all possibilities of future use of the substance.”

§ (D) Scenes a faire

· Copyright does not extend to “incidents, characters or settings which are as a practical matter indispensable, or at least standard in the treatment of a given topic.”

o Ex) “Elements such as drunks, prostitutes, vermin and derelict cars would appear in any realistic work about the work of policemen in South Bronx.”

o Ex) Law and Order, NYPD Blue, and Law & Order:

§ All involve similar stories and characters

o Ex) Golf-video games

§ Would expect to see golfers, sand traps, overhead views, etc.

– (2) Design of Useful Articles

o (§101) A “useful article” is an article having an intrinsic function that is not merely to portray the appearance of the article or to convey information.

§ Black Letter: Unless the shape of an automobile, airplane, ladies’ dress, food processor, television set, or any other industrial product contains some element that, physically or conceptually, can be identified as separable from the utilitarian aspects of that article, the design would not be copyrighted under the bill

· (1) Physical Separability

o Can you separate the object out?

§ An expressive element of a useful article is physically separable if it can stand alone from the article as a whole and if such separation does not impair the utility of the article

· (2) Conceptual Separability

o Copyrightability “ultimately should depend on the extent to which the work reflects artistic expression uninhibited by functional considerations.”

o *Brandir International v. Cascade (2nd Cir. 1987)

§ Background: Plaintiff designed wire sculptures made out of a continuous piece of wire. These were displayed in people’s homes. Plaintiff later adapted the sculptures, later known as RIBBON bike racks.

· Held: RIBBON rack was not copyrightable

o Plaintiff changed the design to accommodate for the bikes.

o Also, if the design is taken away, the usefulness aspect is completely gone

§ Ex) Mickey mouse telephone. Push buttons on torso and telephone receiver resting on the hand

· Conceptual Separability?

o Certainly, the functional considerations of the phone did not attribute to the artistic expression of Mickey Mouse

· Physical Separability?